Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant's remarks filed 6/22/2026 have been fully considered.
Regarding the prior claim objections, 112(b) rejections, Applicant’s amendments overcome all prior objections/rejections.
Regarding the prior art rejection of claim 1, in paragraph 4 of page 5 through paragraph 3 of page 6 of Applicant’s Remarks, Applicant’s arguments are directed to that the prior art fails to disclose, teach, or suggest the amended limitations of amended claim 1.
The arguments are not persuasive because each limitation is mapped to the same prior art of the previous office action. Please see mapping of amended limitations to prior art below for details.
Regarding the new claims, please see the action below for any relevant details.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the following must be shown or the feature(s) canceled from the claim(s):
“one or more pins” identified in claim 1 and “an anti-rotation structure” identified in claim 3, as these appear to possibly be claimed as materially different elements.
“one or more fasteners” identified in claim 16 and “an anti-rotation structure” identified in claim 18, as these appear to possibly be claimed as materially different elements.
Note that 35 U.S.C. 113 identifies the requirement for drawings to be generally provided (“The applicant shall furnish a drawing where necessary for the understanding of the subject matter sought to be patented.”) and 37 CFR 1.83(a) identifies requirements for what those drawings must show (“The drawing in a nonprovisional application must show every feature of the invention specified in the claims. However, conventional features disclosed in the description and claims, where their detailed illustration is not essential for a proper understanding of the invention, should be illustrated in the drawing in the form of a graphical drawing symbol or a labeled representation (e.g., a labeled rectangular box)”).
No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
“fasteners” identified in claim 16. The written specification does not identify such.
Claim Interpretation
The previous claim interpretation(s) (identified in the office action mailed on 3/20/2026) made under 35 U.S.C. 112(f) regarding the term(s) “bias device”, “anti-rotation structure”, is/are maintained.
The previous claim interpretation (identified in the office action mailed on 3/20/2026) regarding the limitation “the at least one bias device is arranged circumferentially around an anti-rotation structure partially embedded in the turbine shroud, within a recess of the nozzle ring or the turbine shroud, and around a central axis of rotation of the turbine” is maintained.
Examiner’s note: For the purposes of examining this application, the limitation “the turbine includes a plurality of the at least one bias device distributed evenly around a circumference of the nozzle ring” within claim 7 is interpreted to mean that the even distribution of the at least one bias device is specifically in a circumferential direction around a circumference of the nozzle ring. This is supported by e.g. para 0038 and Fig 2 wherein bias device 314 is shown distributed evenly specifically in a circumferential direction around a circumference of the nozzle ring.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim(s) 16-23 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
New claim 16 (last two limitations) identifies “fasteners” whereas the original disclosure does not identify such.
There is no support in the original disclosure for the limitation(s) as claimed.
Therefore, the limitation(s) add(s) new matter and fail(s) to comply with the written description requirement wherein it appears this invention has not been described with sufficient particularity in the original disclosure such that one skilled in the art would recognize that the applicant had possession of the claimed invention at the time of filing.
Claim(s) 17-23 is/are also rejected by virtue of their dependency.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION. - The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim(s) 1-8, 16-23 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 (line 5) recites the limitation “the semi-floating nozzle ring” which lacks proper antecedent basis and thus renders the claim indefinite. It is suggested that the limitation be rewritten as -- the nozzle ring --.
Claim 16 (line 5) recites the limitation “the semi-floating nozzle ring” which lacks proper antecedent basis and thus renders the claim indefinite.
Claim 3 (line 3) recites the limitation “a central axis of rotation of the turbine” which renders the claim indefinite because it is unclear if this references the same central axis previously identified in claim 1 or a different central axis. If the former, then it is suggested that the limitation be rewritten as -- the central axis --.
Claim 18 (line 3) recites the limitation “a central axis of rotation of the turbine” which renders the claim indefinite because it is unclear if this references the same central axis previously identified in claim 16 or a different central axis.
Claim 3 (line 2) recites the limitation “an anti-rotation structure” which renders the claim indefinite because it is unclear if this references the one or more pins previously identified in claim 1 or something else.
Claim 18 (line 2) recites the limitation “an anti-rotation structure” which renders the claim indefinite because it is unclear if this references the one or more fasteners previously identified in claim 16 or something else.
Claim(s) 2-8, 17-23 is/are also rejected by virtue of dependency.
In view of the 112(b) rejections set forth above, the claims are rejected below as best understood.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1, 3, 4, 5, 6, 8, 16, 18, 19, 20, 21, 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 6168375 B1 (hereinafter LaRue) in view of US 8662833 B2 (hereinafter Wengert).
Examiner’s note: All mapping below (references made to reference characters, figures, paragraphs, etc.) is with regard to the base reference (the first reference identified above) unless otherwise noted.
Regarding claim 1, LaRue discloses:
The compressor side of a turbocharger comprising:
at least one bias device (spring means 34; Fig 1) arranged at an interface between a nozzle ring (20) and a shroud (24),
the at least one bias device configured to exert an axial force on the nozzle ring to maintain contact between vane tips (Annotated Fig 1a) of the nozzle ring and a volute wall (Annotated Fig 1a) (e.g. described in abstract).
and one or more pins (40; Fig 1) anchoring the semi-floating nozzle ring in place relative to a rotation about a central axis (e.g. evident from what Fig 1 shows),
wherein each of the one or more pins is surrounded by and extend through the at least one bias device (Fig 1 shows this, wherein spring 34 extends annularly around the central axis).
LaRue may not explicitly disclose: The shroud is a turbine shroud (LaRue’s shroud is a compressor shroud).
However, Wengert, in the same field of endeavor, turbochargers, teaches:
Analogous variable turbine geometry (abstract) including a nozzle ring (11 combined with 17; Fig 1) with vanes (9), springs (18, 19) pressing on the ring from a turbine shroud (3) toward a volute wall (5).
Therefore, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to modify LaRue to include Wengert’s teachings as described above, having LaRue’s structure housed within the turbine side of the turbocharger as taught by Wengert rather than housed within the compressor side of the turbocharger, in order to have the benefits of LaRue’s structure incorporated into a turbocharger turbine instead of a turbocharger compressor. It is noted that it is known in the art to have designs of vaned rings incorporated within both/either a turbocharger compressor and/or a turbocharger turbine, as even stated in Applicant’s own paragraph 0004.
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Annotated Fig 1a
Regarding claim 16, claim 16 is entirely substantially similar to claim 1, except that the “one or more pins” in claim 1 is “one or more fasteners” in claim 16, thus is similarly rejected over the prior art (see prior art rejection of claim 1 above).
Regarding claim 3, LaRue, as modified above, discloses:
the at least one bias device is arranged circumferentially around an anti-rotation structure (pin 40; or alternatively slot 42 or slot 44) partially embedded in the turbine shroud (Fig 1 shows this), within a recess of the nozzle ring or the turbine shroud (Fig 1 shows this), and around a central axis of rotation of the turbine (Fig 1 shows this).
Regarding claim 4, LaRue, as modified above, discloses all claim limitations (see above) except may not explicitly disclose:
the at least one bias device has a spring force that is double that of a compressive force exerted on the at least one bias device by axial expansion of the nozzle ring.
However, LaRue’s spring inherently has some kind of spring force relative to the compressive force exerted on it by the nozzle ring, and courts have established that a change in size/proportion will not sustain a patent and is not inventive, rather is a practice requiring only ordinary skill and hence is considered a routine expedient and obvious to a person having ordinary skill in the art. In this case, any difference between the prior art’s inherent spring size/force relative to the compressive force exerted on it and Applicant’s spring force size/force relative to the compressive force exerted on it is held to be obvious. See MPEP 2144.04(IV). Also, it is a typical engineering approach to select a spring having a certain spring force relative to the compressive force acting on it in order to obtain a desired/required factor of safety (see for example https://en.wikipedia.org/wiki/Factor_of_safety).
Regarding claim 5, LaRue, as modified above, discloses:
axial movement of the nozzle ring is enabled by the at least one bias device (Fig 1 shows this; e.g. col 2 lines 43-53).
Regarding claim 6: the recitation “a pressure exerted on the volute wall by the vane tips is maintained uniform during operation of the turbine” is considered a product-by-process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patent-ability of a product does not depend on its method of production or use. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable. Please see MPEP 2113(I).
In this case, pressure exerted on the volute wall by the vane tips of the prior art is capable of being maintained uniform during operation of the turbine, thus the product in Applicant’s claim is the same or obvious from a product of the prior art.
Regarding claim 8, LaRue, as modified above, discloses:
the turbine is implemented in a radial turbocharger (Fig 1 shows this).
Claims 18, 19, 20, 21, 23 (depending from independent claim 16) are each entirely substantially similar to claims 3, 4, 5, 6, 8 (depending from independent claim 1), respectively, thus are each similarly rejected under 35 U.S.C. 103 over the prior art (see prior art rejections of claims 3, 4, 5, 6, 8 above).
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over the prior art reference(s) as applied to claim 1 above, and as evidenced by US 20160076439 A1 (hereinafter Martens).
Regarding claim 2, LaRue, as modified above, discloses:
the at least one bias device is a spring (e.g. col 3 lines 41-48) arranged co-planar with the volute wall and configured to deform elastically along an axial direction (Fig 1 shows this).
LaRue may not explicitly disclose: The spring is a disc spring.
However, LaRue does disclose the spring is a wave spring (e.g. col 3 lines 41-48). Since the applicant has not disclosed that a disc spring serves any particular advantage or particular purpose, or that it solves a stated problem, and it appears that a wave spring identified by LaRue would perform equally well with a disc spring as specified by the applicant, as both springs exert axial force in a confined axial space, it would have been an obvious matter of design choice for a person having ordinary skill in the art to choose either a disc spring or a wave spring.
Furthermore, Martens, in the same field of endeavor of turbocharges, provides evidence that choosing between a coil spring, a spiral spring, a wave spring, or a disc spring, is just a mere design choice which constitutes choosing a suitably designed spring for exerting axial force (para 0016, 0035).
The basis for the design choice rejection above without the use of a secondary reference originates from case law: Ex parte Clapp, 227 USPQ 972, 973 (Bd.Pat.App. & Int. 1985). Whereby, to support a conclusion that a claim is directed to obvious subject matter, the prior art references must suggest expressly or impliedly the claimed invention or an Examiner must present a "convincing line of reasoning" as to why one of ordinary skill in the art would have found the claimed invention to have been obvious. In doing so, the Examiner may rely on “logic or scientific principle.” In re Soli, 137 USPQ 797, 801 (CCPA 1963). See also MPEP 2144.02. When determining whether or not a rejection based on design choice is appropriate, the Examiner must review the specification and ascertain if the limitation in question is disclosed as serving any advantage or particular purpose, or whether it solves a stated problem. The Examiner also should explain the reasoning used to determine that the prior art would have performed equally as well as the claimed invention. These two steps help present the aforementioned "convincing line of reasoning." Clapp, 227 USPQ at 973.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over the prior art reference(s) as applied to claim 16 above, and as evidenced by US 20160076439 A1 (hereinafter Martens).
Regarding claim 17, claim 17 is entirely substantially similar to claim 2, thus is similarly rejected over the prior art (see prior art rejection of claim 2 above).
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
Claim(s) 7 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim(s) 7 is mapped below to the prior art reference(s) as applied to claim 1 above, and further in view of US 5515989 A (hereinafter Petrie) and as evidenced by non-patent literature “3 ways to stack compression spring” (hereinafter Tevema; provided with the office action mailed on 3/20/2026).
Regarding claim 7, LaRue, as modified above, discloses all claim limitations (see above) except may not explicitly disclose:
the turbine includes a plurality of the at least one bias device distributed evenly around a circumference of the nozzle ring.
See also the related claim interpretation identified above for this limitation, wherein it is identified that the even distribution of the at least one bias device is specifically in a circumferential direction around a circumference of the nozzle ring.
There are prior art references which teach an even distribution of springs. Some are discussed as follows.
Petrie, in the same field of endeavor, biasing devices, teaches:
In Figs 7, 8 an object 500 pressed against a wall 515 via a plurality of individual springs 502, wherein the individual springs are each distributed evenly across the object 500 in order to create an “even distribution of spring forces [which] provides an excellent seal between the” wall 515 and object 500 (col 5 lines 1-3) (col 4 line 55 – col 5 line 3). However, this does not necessarily teach an arrangement which would result in LaRue’s single wave spring 34 being reconfigured as individual springs distributed in a circumferential direction. Even if it did result in such a configuration within LaRue, then LaRue’s springs would have to be yet further reconfigured in order to also continue to meet the claim 1 limitation “wherein each of the one or more pins is surrounded by and extend through the at least one bias device”.
Wengert, in the same field of endeavor, design of turbochargers, teaches:
a plurality of springs (18; Fig 1; col 3 line 65 – col 4 line 2) distributed evenly around a circumference of the nozzle ring with the advantage being that having a plurality of springs require only a little accommodation space and can therefore be easily arranged around other structure (column 4 lines 3-6). Therefore, it might have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to modify LaRue to include Wengert’s teachings as described above, utilizing Wengert’s plurality of springs (wherein each of Wengert’s springs is accommodated within its own accommodation space), in order to design a spring force system using a plurality of springs wherein the springs require only a little accommodation space and can therefore be easily arranged around other structure (column 4 lines 3-6). However, such a reconfiguration of LaRue would then violate the claim 1 requirement of “wherein each of the one or more pins is surrounded by and extend through the at least one bias device”, thus LaRue’s device would require yet further reconfiguration of the bias device(s) and pin(s).
Tevema, in the same field of endeavor of springs, provides evidence that choosing between a single compression spring or a plurality of compression springs in various circuits, e.g. in parallel, is an obvious design consideration: Page 1, for example, identifies that “In many applications it's impossible to provide the correct forces with just one compression spring. Several compression springs of the same or different dimensions are often used for this to create the right forces.” and “In parallel circuits, two or more compression springs are placed under the same pressure plate. This spreads the pressure over the two compression springs. The force of the total spring system is always greater than the spring constant than that of one spring.” However, this teaching/motivation also does not necessarily result in a configuration within LaRue that meets the claim 1 and claim 7 requirements.
At this time, the prior art of record does not fairly disclose, teach, or suggest the missing limitation(s) as described above such that a modification would be possible in order to arrive at the claimed invention. One would not be motivated to modify LaRue’s bias device(s) and pin(s) such that it would read on Applicant’s claim, without improper hindsight from Applicant’s disclosure. The claim is therefore deemed to be allowable over the prior art.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Art Golik whose telephone number is (571)272-6211. The examiner can normally be reached Mon-Fri 9:00-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Courtney Heinle can be reached at 571-270-3508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Art Golik/Examiner, Art Unit 3745
/COURTNEY D HEINLE/Supervisory Patent Examiner, Art Unit 3745
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